Intellectual Property: A Guide for Engineers
3 Trademarks and Service Marks
How does the field of trademark law impact the practice of an engineer? Any company that sells goods and services has to call its goods or services something so that consumers can distinguish the maker of a product or the provider of a service from others in the same field. Under the Federal Trademark Act, also known as the Lanham Act, a trademark is defined as
any word, name, symbol or device or any combination thereof which is used by a person or which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate their source.
This definition was derived largely from the common law definition developed by the courts many years before the enactment of the Lanham Act in 1946. The Lanham Act defines a service mark in essentially the same way except that a service mark is designed to identify and distinguish the services of one person from the services of others. Thus, a trademark or service mark could be a word such as EXXON or KODAK, a person's name such as TOMMY HILFIGER or GARTH BROOKS, a symbol such as the NIKE “Swoosh” or McDonald's “Golden Arches,” or a device, such as the shape of a Coca Cola bottle, the roar of the MGM Lion or even distinctive visual movements of animation, such as the TRI-STAR Pictures flying horse at the beginning of a movie, or any combination of these things. It can even be the particular color of a product, such as pink fiberglass insulation. The Lanham Act also defines two other types of registrable marks, namely “certification” and “collective membership” marks. A certification mark is “any word, name, symbol or device or any combination thereof which is used by a person other than the owner of the mark … to certify the regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such a person's goods or services, or that work or labor on the goods or services was performed by members of a union or other organization.” A collective membership mark refers to a trademark or service mark used by members of “a cooperative, an association, or other collective group or organization … and includes marks indicating membership in a union, an association or other organization. ”A common example of a certification mark would be words alone or words with designs certifying that an agricultural product, e.g., rice, watermelons, chickens, etc., are produced or grown in Arkansas. A collective membership mark is a mark that an organization might use to designate or identify members of the organization, e.g., the Rotary Club or a professional society such as the American Society of Mechanical Engineers.